On April 11, the National Assembly definitively adopted the PACTE bill1.
In its section entitled "Protecting inventions and freeing up the experimentation of our companies", the bill contains several patent provisions aimed, according to the text, at "promoting innovation and facilitating the growth of SMEs".
The main innovations in the field of industrial property, as indicated below, are essentially in line with the text adopted at first reading by the National Assembly on October 9, 2018. For a more detailed analysis of these, we refer to our article of 10 October 20182: https://www.august-debouzy.com/fr/blog/1238-loi-pacte-et-propriete-industrielle-comment-rendre-le-brevet-francais-plus-attractif.
The PACTE law has not yet been promulgated due to a referral to the Constitutional Council on 16 April3. Nevertheless, this referral, on which the Constitutional Council must rule within one month (unless the government requests that this period be reduced to eight days in urgent cases), does not concern the provisions on industrial property. Unless they are declared unconstitutional ex officio by the Constitutional Council, their promulgation and publication should therefore take place at the beginning of June 2019. Nevertheless, the effective application of most of these provisions is subject to the intervention of regulatory texts which will only take place in 2020. Finally, only few should be immediately applicable (see §4 to 7), in particular those relating to statuts of limitation which are still subject to the transitional provisions of Article 2222 of the Civil Code mentioned below.
The strengthening of utility certificates (Article 118, former Article 40)
The duration of utility certificate will be extended from 6 to 10 years. It will now be possible to convert a utility certificate application into a patent application (the reverse transformation already exists). The modalities for carrying out this transformation (procedure and deadlines) will be later fixed by regulation4.
This text must enter into force on the date of publication of the implementing regulation and within a maximum period of 12 months following the publication of the law5, i.e. in June 2020 if publication takes place as planned in June 2019. In the absence of a law, it is the regulatory text that will have to say whether these new provisions will apply to utility certificates in force on the day the law enters into force, or only to those filed subsequently.
The establishment of an opposition procedure before the French PTO (hereinafter "INPI") (Article 121, former Article 42)
Article 121 proposes to introduce an opposition procedure before the INPI against French patents. As modalities of this procedure (time limits, costs, appeals, etc.) must be set by order, its implementation should take place at the earliest 15 months from the promulgation of the law6, i.e. in September 2020 if the promulgation takes place as planned in June 2019.
Through this reform, which creates the possibility of obtaining the cancellation of a patent through administrative proceedings- whereas only the judicial proceedings is currently open against French patents - the legislator claims to set up a "simple, rapid and inexpensive administrative system" leading to a "cleaning of the registers" in order to "mechanically strengthen the presumption of validity of all French patents and improve the legal security associated with titles"7.
The reality is that everything remains to be done: without a complete overhaul of the INPI, which will require increasing its staff and an adequate training of its examiners (who today have no experience in opposition or even in examining the substance of some patentability conditions), these goals of simplicity and speed are likely to remain a pious wish.
In addition to the practical organization, this provision still raises many questions that were discussed in our article of 10 October 20188, concerning in particular the appeal procedure against decision of the Director of the INPI ruling on opposition:
- Will the decision of the Paris Court of Appeal ruling on opposition (this Court being competent to examine appeals against the decisions of the Director of the INPI) have res judicata and/or impose an "estoppel" on the parties in an action for invalidity regarding the same patent?
- Will the appeal be as binding as in trademarks opposition or SPC applications rejection, in particular will it be a procedure without case management proceedings? Will it be a "nondévolutif" appeal (i.e., which means that, no new exhibits or arguments compared to those used before the INPI can be raised before the Court of Appeal)? If so, will this prevent the opponent from raising a new prior art before the Court which would have been discovered after the opposition proceedings before the INPI?
It is clear that, behind the simplicity and legal certainty established by the legislator, there are in fact many grey areas.
Strengthening the examination procedure (Article 122, former Article 42bis)
Article L. 612-12 of the French Intellectual Property code (hereinafter "CPI") already provides nine grounds for rejecting a patent application during its examination by the INPI (1° to 9°). Article 122 of the PACTE bill proposes to extend the grounds for rejection 4°, 5° and 7° of Article L. 612-12 as follows:...